20 May 2017

'Fixing Incontestability: The Next Frontier?' by Rebecca Tushnet in (2017) Boston University Journal of Science and Technology Lawcomments

Incontestability is a nearly unique feature of American trademark law, with a unique American implementation. The concept of incontestability allows a trademark registrant to overcome arguments that a symbol is merely descriptive of features or qualities of the registrant’s goods or services—for example, “Juicy” for apples. Incontestability provides a nearly irrebuttable presumption of trademark meaning, which is a powerful tool for trademark owners. Unfortunately, incontestability is not granted as carefully as its power would counsel. Courts may misunderstand either the prerequisites for, or the meaning of incontestability, allowing trademark claimants to assert rights that they don’t actually have.
Incontestability needs clearer signals about what it is and when it is available. In the absence of serious substantive examination of incontestability at the PTO—which seems unlikely to materialize any time soon—changes designed to increase the salience of incontestability’s requirements to filers and to courts could provide some protection against wrongful assertions. Incontestability can only serve the trademark system if it is granted properly and consistently.

'A socialised conceptualisation of individual privacy: a theoretical and empirical study of the notion of the ‘public’ in UK MoPI cases' by David Mead in (2017) Journal of Media Law 1-32 comments

This article conceptualises a more public, more socialised notion of privacy in contrast to the archetype: that my privacy is of interest and value only to me. Doing so has historically left claims to privacy exposed against claims to free speech, with its long pedigree and generally acknowledged wider instrumental role. This article provides a corrective. The first part offers a typology of rationales at one of two meta-levels: privacy as a means to effect assurance or as a means to protect someone’s activities. The second discusses the results of some small-scale empirical doctrinal research: a sample analysis of 27 UK privacy cases looking to identify the judicial ascription of the value of privacy, specifically whether any judges conceptualise privacy as having a more social, or public, value or utility. The results are perhaps not unexpected. Almost exclusively, judges frame their rationales for protecting privacy in purely individualised terms.

Mead concludes

Why does all this matter? I think there are two reasons. The first is a conceptual one. If we are to have newspaper outings of, taking a recent example, MPs such as Keith Vaz, we should be sure the analytical framework is responsive to all the variables, not just to some or, as I would argue, to all of those on one side (freedom of expression) but only to a sample on the other. Second, at a practical level, it matters how cases are argued and resolved and who might claim the benefit of any remedy. Let us take those in turn.

At a conceptual level, if we conceive of privacy as offering wider social utility rather than simply as something of individual value, we can better appreciate that the judicial and policy approach – of private gain against public benefit of free speech – creates a false dichotomy. Ian Leigh and Lawrence Lustgarten wrote about the balance between rights and security in the 1980s and Daniel Solove adopted it in the more specific context of digital privacy and security nearly 20 years later. Rather than being in oppositional tension, protecting privacy may in fact sustain the same sorts of goals that securing protection for free speech might also serve. We see this most obviously when we considered claims to intellectual privacy, to innovative privacy and to facilitative privacy, but insulating privacy allows us to relax before immersing ourselves once more in the public sphere, while coalescing privacy, it was argued above, provides the level playing field necessary for public debate. Viewing the potential harm as connoting something more collective requires the construction of a very different utilitarian calculus. In short, and perhaps counter-intuitively, failing to see that on occasion securing an individual's privacy (that is, not allowing unrestrained publication about someone's private life) might not also lead to a flourishing, rather than a diminution, of free speech constitutes a category error. Privacy and free speech, or elements of each at least, can in fact be the same sides of the coin.

A couple of points flow from that new analytical approach. If privacy is no longer solely an individual but also a social or collective good, does this mean A is or even should be able to waive it? As Jane Bailey put it, in the context of online privacy, especially those victims/subjects of child pornography,

if privacy is, or is becoming, a collective or public good, the weaknesses of policy solutions that establish a property right in personal information or that allow one to waive one’s privacy rights also would become clear. If one individual or a group of individuals waives privacy rights, the level of privacy for all individuals decreases because the value of privacy decreases.

There are two limbs to this. If A really is not bothered by any loss of privacy, what could found B, C and D’s collective right to be aggrieved? Above (in the section ‘The social utility of privacy’), we considered the various social claims that can be made on their behalf. Broadly, even if A feels she has suffered no harm, a strong case can be made that not only are B, C and D impoverished but we all are, or at least there is the potential for us all to be. Put thus, it is not A's right, or not A's right alone, to waive. That thought does not assist in resolving the other difficulty – how can we give practical effect to that collective assertion of harm, especially in the face of A's consent or intransigence? One practical response in the UK setting would be the adjustment of regulatory rules requiring only the affected individual to mount a claim. IPSO requires, for complaints about anything other than accuracy in the Editors' Code, a person to be ‘directly affected’. IMPRESS similarly requires someone to have been personally affected other than for complaints about accuracy where it permits third party complaints. This provides, at best, only a very partial solution. It is one thing to confer standing on third parties and quite another to craft a remedy that adequately responds to those collective, mutual interests. The following (rather inelegantly drafted) sample correction avails a flavour of what might be conveyed.

On 1 January, we published an item indicating that A had done X [in circumstances Y]. While A did not contact us to complain, The Daily News acknowledges that in publishing that item, we acted improperly. That item might have led many others to believe that doing X [in circumstances Y] was a proper subject for a newspaper to report on. In doing so, we may have dissuaded others from doing or even from trying to do X. The Daily News accepts that doing X is or has the potential to be a socially useful activity, contributing to [β and δ] and thus has long term or wider benefits for us all.

Remaining with our conceptual strand, James Nehf identifies two further issues that flow from framing privacy as implicating only individualised utility. First, those not affected, or rather those perceiving themselves as not being affected, may disengage from the debate. This is, as Solove points out, a general response in the surveillance and security debate – I’ve got nothing to hide, so what’s the problem? Additionally, and this flows from its non-absolute nature requiring privacy to compete with other rights and social interests, he notes that ‘the influence of interest group politics could not be overcome’. He adverts to the changed frame within which we now debate environmental harms – as something that now no longer effects simply the neighbour onto whose land waste spills but as a general societal problem calling for a public collective regulatory response.

If we turn back to the practical realisation of our expanded notion of privacy, Part IV showed that there was no evidence of wider social utility in court judgments (though the survey has not so far considered how cases were presented and argued by counsel). It is impossible to determine if appeals to social utility would have affected the outcome in any one case. It would be easy enough to locate claims to a more socially responsive conception of privacy within the current doctrinal framework. Even given the very clear contextual steer in Murray by the Master of the Rolls
(and endorsed by the Supreme Court in In re JR 38), the first stage – whether or not there was a reasonable expectation – while objective, has as its focus the effect on the claimant, not the effect on wider society. Nothing though would seem to prevent it being argued at the second stage of the ultimate balancing test that it is not simply the comparative importance to the claimant that should be on one side of the equation but the social good that protecting privacy could effect or would be capable of effecting.

While the appropriateness of the balancing test is contested at a normative level, primarily because of the difficulty, indeed inherent impossibility, of attributing value to and then weighing against each other two things that are both immeasurable and incommensurable, this paper takes as a given its continued traction. This is not the place to rehearse, let alone resolve that argument. That said, while re-framing privacy, in collective terms, would complicate that balancing exercise, by pairing public interest expression with of public interest privacy, we might explore this a little more before ending. While, clearly, it would be impossible to prove or even quantify the social utility of preventing a particular privacy-invading publication, that should not matter. The claim that a free press contributes to democratic self-governance has never been put to proof; its truth has now simply been asserted so long and so vociferously that it is self-evident – judicial notice is simply taken of this now undisputed fact. Further, it is not being asserted that all invasions of A's privacy would implicate a more collective notion of privacy. This though is, or should be true, for free speech (on the other side of the equation) – not all speech goes to enhancing democracy or offering different versions of truth in the market place for acceptance or rejection; it is hard to see how tittle tattle can ever do so.
Our more socialised conception of privacy entails rejection of the monolithicism of free speech and, now, of privacy and calls for a more nuanced judicial analysis of both sides, evaluating more precisely the exact harms alleged to be suffered if the material is (not) published. Of course, to repeat the point made above, what we are dealing with on the privacy side is more likely an inchoate harm but this is likely as true of many claims made about the collective harms, or gains, of free speech.

In all this, it would be critical properly to frame the various interests at play and in tension. This might be the wider social utility or the countervailing public interest. Tugendhat J was alert to the difficulties in Green Corns. There, the issue – to remind ourselves – was whether or not to restrain a local paper publishing certain details of a planned children's care home. He accepted that there was no public interest properly defined at all in publishing the information that was subject to restraint.

The public interest was in how (perhaps by whom) the children were to be cared for. That was not the material the paper sought to publish, which was the location of the home. Essentially, what was being set up in opposition, he continued, was a series of private interests in, for example, house values which the paper sought to aggregate and to wrap up collectively as a public interest. This goes to an earlier discussion: that there is a difference between a common or collective public interest, in Regan's (n 2) terms, and aggregative or cumulative private interests.

In conclusion, one matter should be made clear. This paper is not arguing that privacy should always or even invariably trump free speech: we should not always have a right to know about the love child of a leading politician. There will quite properly be times – many and frequent perhaps – as a matter both of plain doctrine and of policy and theory – when the interest in protecting someone's privacy is outweighed by the greater interest in publication, even where there might also be some consequent social or collective (future) loss if the private facts become publicly known. It is making the much simpler point. That it is time we reconceptualised privacy and its instrumental possibilities, and thus reconfigured the balancing matrix, avoiding (in footballing terms) free speech always being the team able to play at home.

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